9
Study on Patent Claim Interpretation
Claim interpretation or construction in courts is a key factor in appropriately determining the scopes of
protection of patented inventions and many critical decisions thereon have been made in various countries. In
1998, the Supreme Court of Japan also admitted in its decisionclaim interpretation under the doctrine of
equivalents. In the meantime, current technical innovations have brought about changes to allow new styles of
patent claims, and how to interpret such new styles of claims is coming up for discussion.
Under the theme of finding desirable ways to interpret patent claims in Japan, research has been carried
out on existing provisions concerning claim interpretation, as well as their changes and tendencies of recent
court decisions in three countries: the U.S., the U.K. and Germany. In particular, the research was focused on
the trends of judicial precedents on the issue of the doctrine of equivalents, interpretation of claims containing
functional expressions, and interpretation of product-by-process claims.
Ⅰ Trends of U.S. Court Decisions
1
resolved by trial judges, and this decision was
affirmed by the U.S. Supreme Court. There is still a
view, however, that claim interpretation is regarded
as being a factual question to be settled by jury
trial.
The next step, i.e., identification of the item,
determines whether all the elements of the claim
read on the item, as a result of claim interpretation.
If all the elements read on the accused item, there
is literal infringement. Absence of one or more
claim elements in the accused item does not
necessarily mean non-infringement. The next
question is whether the accused item infringes
under the doctrine of equivalents.
In judicial precedents, the legal nature of the
“reading” work is treated as being a factual matter.
Thus, claim interpretation and the question of
infringement are different matters that should not
be discussed homogeneously but separately and
independently as distinct steps.
(3) Rules
and
Factors
in
Claim
Interpretation and How These are
Considered in Judicial Precedents
In general, it is rather seldom that claim
language is definite and clear by itself and devoid of
any obscurity. Usually, therefore, several factors are
considered when patent claims are interpreted. The
aforementioned Markman appeal court decision
suggested that claim interpretation is more
analogous to the literal construction of the language
used in statutes than to the construction of
contracts. The decision further held that, although
ideally no obscurity should exist in light of
knowledge of one of ordinary skill in the art, the
specification, and prosecution history, the claims
should be interpreted by focusing on how skilled
persons would have understood the claimed
invention at the time when the invention was made,
and that the inventor’s intent is not significant in
construing the claim.
Provisions Concerning Claim Interpretation
(1) Provisions Concerning Patent Infringement
in the U.S. Patent Law - General Principle
Basic rules for claim interpretation and patent
infringement in the U.S. are provided in the Patent
Law, specifically in 35 U.S.C.§154(a)(1), which
provides for contents of patent right, and 35
U.S.C.§271(a), which prescribes basic rules
regarding patent infringement.
Patent infringement essentially requires, as
the premise, that an accused product be identical to
a patented invention. The patented invention must
be determined with reference to the disclosure in
the specification, as clearly set forth in 35
U.S.C.§154(a)(1).
At the same time, 35 U.S.C.§112(1) provides
that a patent claim bears the most essential role in
particularly pointing out the subject matter which
the applicant regards as his invention.
(2) Literal
Infringement
and
Claim
Interpretation
Theories also support that a patent claim has
two functions: j to clarify the scope of an invention
on which patentability requirements are to be
questioned; and k to clarify the scope of an
invention on judgment on infringement.
Traditionally, many court decisions on patent
infringement disputes have relied upon a two-step
method which includes a step of literally
interpreting the words of a patent claim
(construction of claim (claim language)) and a step
of “reading” the result of the interpretation on an
accused item (identification of item).
The appeal court decision in Markman v.
Westview Instruments, Inc(*1). clearly held that the
first step, i.e., interpretation and construction of
patent claims, is a matter of law which is to be
(*1) Markman v. Westview Instruments, Inc., 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (in banc), aff'd, 38 USPQ2d 1461 (1996).
(*1)
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A brief summary will be given below as to how
these factors are considered in judicial
precedents.(*2)
The words used in a patent claim should be
given their ordinary meaning, unless used in a
special meaning in the specification. The words
must be clearly defined by intrinsic evidences(*3)
when they are used in a special meaning. As to the
ordinary meaning of each word, one can resort to
dictionaries.
The specification may serve as a lexicon or a
kind of dictionary in constructing the claims. When
interpreting claims, however, attention must be
paid j not to restrict the claims by “reading into”
the claims limitations from the description and
embodiments in the specification, and k not to
neglect, ignore or otherwise “read out” limitations
in the claims to widen the scope to include subject
matter disclosed in the specification but not claimed.
Obviously, however, the former j does not forbid
interpreting the patent claims by considering
matters that are clearly limited in the specification.
A recent court decision(*4) held that not only
“explicit” limitations but also “implicit” limitations
may be considered in claim interpretation.
The prosecution history has been given a status
of a major test in interpreting the meaning of words
in a claim. This function of the prosecution history,
however, should be clearly demarcated from the
rule of prosecution history estoppel that has an
effect of restricting application of the doctrine of
equivalents. The former functions as a tool or a
reference which helps claim interpretation,
whereas the latter is a principle originating from
the legal theory of estoppel and prohibiting an
applicant from resurrecting a right regarding
matters that the applicant has surrendered in the
course of prosecution.
Extrinsic evidences(*5) are usable to show the
prior art at the time when the invention was made,
thus help in construing the claim words. However,
the Markman appeal court decision held that
extrinsic evidence should be used for the purpose
of assisting courts in understanding the technical
context of the claim statements, but not for clearing
any obscurity of the claim words. A slight confusion
seems to exist among judgments of CAFC
regarding the extent of extrinsic evidence, as well
as to what degree such extrinsic evidence can be
relied upon. The above-mentioned decision also
assumes that claim interpretation is to be treated as
a matter of law. A critical opinion therefore exists
that factual matters that should be settled by jury
trial are handled by judges as being matters of law.
(4) Brief Summary
Claim interpretation is the first step of the
process for judging infringement, whether it is a
literal infringement or an infringement under the
doctrine of equivalents. The setting-up of clear
standards for claim interpretation is therefore
significant. Practically, however, wide variation and
diversification of actual patent claims make it
extremely difficult to work out any comprehensive
standard for claim interpretation.
Basic elements of the test and scheme for
claim interpretation have been clarified appreciably
owing to accumulation of judicial precedents, and
the Markman appeal court decision has set out a
“summing up” on this issue, which is relied upon in
many current court decisions.
The basic question as to whether claim
interpretation is a matter of law or a matter of fact
is still disputable. In this relation, slight confusion
still exists regarding individual issues such as the
question of how to weigh extrinsic evidence and
the question of to what extent the claim words
should be restricted by the contents of the
specification.
2
Current Tendency of Court Decisions
Regarding the Doctrine of Equivalents
(1) Tests on Application of the Doctrine of
Equivalents Set Out by the Supreme
Court in Warner-Jenkinson Co.,Inc. v.
Hilton Davis Chemical Co.(*6)
(i) Tests for determination of scope of equivalents
In the in banc Hilton Davis decision, the CAFC
held that the determination of whether a difference
between an element of a patent claim and a
corresponding element of an accused product is
substantial or insubstantial should follow the Triple
identity test(*7) set out in the Graver Tank Supreme
Court decision.(*8) The CAFC also made it clear
that the time criterion of possible knowledge of
person skilled in the art with respect to the
interchangeability
(hereinafter, abbreviated as
“possible knowledge of interchangeability”)(*9) is at
(*2) Chisum on Patents (Matthew Bender, 2001) Volume 5:Chapter 18, 18.03[2][a] (Matthew Bender, 2001).
(*3) “intrinsic” evidence includes a patent's claim language, the specification and the prosecution history.
(*4) Bell Atl. Network Servs., Inc. v. Covad Communs. Group, Inc., 262 F.3d 1258 (Fed.Cir.2000); SciMed Life Sys. v. Advanced
Cardiovascular Sys., 242 F.3d 1337 (Fed.Cir.2000).
(*5) “extrinsic” evidence is all evidence external to “intrinsic” evidence, including prior art, expert testimony, etc. To which
extent “extrinsic evidence” includes is differently considered by decisions.
(*6) Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).
(*7) Triple identity test is a test of identity in the following three elements:
c substantially the same function, d substantially the
(*2)
(*6)
(*3)
(*7)
same way, and e substantially the same result.
(*4)
(*8)
(*8) Graver Tank & Mfg. Co. v. Linde Air Products Co., 399 U.S. 605,
85 USPQ 328 (1950).
(*5)
(*9)
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knowledge of interchangeability is moot. The CAFC
decisions also show that the difference is likely to
be regarded as being “substantial” when an accused
product has been designed around the patent(*11) or
when an accused product was cited as a prior art in
an Office Action in the course of prosecution (*12).
(ii) CAFC decisions regarding the all elements rule
There are many cases which dealt with the
“limitation by limitation rule” that questions
whether an accused product has elements
corresponding to elements of a patent claim and
that permits arbitrary combinations of such
corresponding elements(*13). There are also cases
which strictly followed the all elements rule and
denied equivalents. In one case, the doctrine of
equivalents was not applied for the reason that
elements of a patent claims were definite(*14). In
another case, application of the doctrine of
equivalents was denied for the reason that
application of this rule would render the limitations
in the claim meaningless(*15). A case also exists in
which claims were interpreted in a restrictive
manner in the light of the disclosure in the
specification, without relying on the doctrine of
equivalents(*16).
(iii) Regarding the time criterion for the issue of
the possible knowledge of interchangeability
According the decision holding that the
question of equivalence is determined at the time of
infringement, equivalency may be extended such
that an element of a device that is not an
equivalent at the time of start of the business
becomes an equivalent at a later time. After the
Warner-Jenkinson Supreme Court decision none of
the CAFC decisions discussed about this issue.
Opinions exist, however, that a defense based on
prior art should be considered by taking into
account not only the state of the art at the time of
patent application but also that at the time of
infringement.
(iv) Cases regarding prosecution history estoppel
There has been no consistency in the CAFC
regarding how strictly prosecution history estoppel
shall be applied.
Therefore, the Festo CAFC in banc held(*17) as
follows:
c The “substantial reason related to patentability”
the time of infringement rather than the time at
which the patent application was filed.
The Warner-Jenkinson Supreme Court decision
did not give a denial to the test in the CAFC in banc
decision, but held that the CAFC should refine the
formulation of the test for equivalence in the
orderly course of case-by-case determinations and
the Supreme Court should leave such refinement to
the CAFC’s sound judgment.
(ii) Regarding “intention to infringe”
The Supreme Court decision held that
whether or not the doctrine of equivalents is to be
applied should not be determined by whether there
was an intention to infringe.
(iii) Regarding “all elements Rule”
It was held by the Supreme Court that the
equivalency should be determined through
comparison of each element of the claimed
invention rather than the invention “as a whole”.
(iv) Regarding prosecution history estoppel
The Supreme Court held that any invention
surrendered by a patentee must be excluded from
the scope of equivalence, due to the legal doctrine
of prosecution history estoppel. It was also
confirmed that estoppel applies in particular to
restrictive amendments effected to render a claim
patentable over prior art, and that when the reason
for the amendment is unclear and not established
by the patentee, estoppel should be applied based
on a presumption.
(2) CAFC Decisions After the Warner-Jenkinson
Supreme Court Decision
(i) Criterion of scope of equivalence
The Warner-Jenkinson Supreme Court Decision
left the task of refinement of formulation of the test
to CAFC’s sound judgment. At present, there are
two procedures available for the determination of
the scope of equivalence: one is the triple identity
test and the other is the test regarding the possible
knowledge of interchangeability. Although several
decisions have been made by the CAFC with
respect to the triple identity test(*10), none of these
decisions clearly showed the extent of “substantiality”.
Thus, the CAFC decisions were made on a
case-by-case basis. In re Kemco Sales, the CAFC
held that when a difference under the triple identity
test is “substantial”, the issue of possible
(*9) The Graver Tank Supreme Court decision suggests “whether persons reasonably skilled in the art would have known of
the interchangeability” as test criteria of doctrine of equivalents, so that it is appropriate understanding “would have
known”.
(*10) Instituform Tec. Inc. v. CAT Contracting Co., 48 USPQ 2d 1610 (Fed. Cir. 1998); Kemco Sales Inc. v. Control Papers Co.,
54 USPQ 2d 1308 (Fed. Cir. 2000).
(*11) Roton Barrier, Inc. v. The Stanley Works, 37 USPQ 2d 1816 (Fed. Cir. 1996).
(*12) National Presto Indus., Inc. v. West Bend Co., 37 USPQ 2d 1685 (Fed. Cir. 1996).
(*13) Festo Co. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 50 USPQ(*11)
2d 1385 (Fed. Cir. 1999), etc.
(*12)
(*14) Sage Products, Inc., v. Devon Industries, Inc., 44 USPQ 2d 1103
(*13)(Fed. Cir. 1997).
(*14)Cir. 1998).
(*15) Dr. Raymond G. Tronzo, v. Biomet, Inc., 47 USPQ 2d 1829 (Fed.
(*15)
(*16) Scimed Life Systems, Inc. v. Advanced Cardiovascular Systems,
Inc., 58 USPQ 2d 1059 (Fed. Cir. 2001).
(*16)
(*17)
Festo
Corp.
v.
Shoketsu
Kinzoku
Kogyo
Kabushiki
Co.,
56
USPQ2d
1865 (Fed. Cir. 2000) (en banc).
(*10)
(*17)
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Sage Products Inc., v. Devon Industries, Inc., held
that the doctrine of equivalents should not be
applied to the reasonably anticipated coverage to be
claimed at the time of filing of a patent application.
This holding is considered to suggest that the
doctrine of equivalents has major purpose to
protect
the scope of substitution by an
after-arising technology that did not exist at the
time of filing, rather than substitution by a
technology anticipated by a person skilled in the art
at the time of filing upon reading a claim.
The question of whether the doctrine of
equivalents covers “subject matter disclosed in the
specification but not claimed” is being at issue in
Johnson & Johnson Associates, Inc. v. R.E. Service
Co., Inc. Considering the above-mentioned purport,
the Court will presumably decide that the scope of
equivalence does not extend to encompass matters
not set forth in the claims (*19).
(4) Conclusion
It is a current trend in the U.S. to give much
weight to the notice function of patent claims. Thus,
the practice of claim interpretation is changing
towards easier understanding of the scope by the
general public than ever. The strict application of
prosecution history estoppel held by the Festo in
banc decision, as well as the all element rule,
symbolically demonstrates this current trend in the
U.S.
From the viewpoint of emphasizing the notice
function, clear and decisive application of the
doctrine of equivalents will be needed on a
case-by-case basis. In particular, it will become
more important to set up clear standards regarding
the “substantiality” factor of the triple identity test,
as well as criteria for “interchangeability” and
“possible knowledge of a person skilled in the art”.
Relationship between the theory of prosecution
history estoppel and the doctrine of equivalents will
also be an important issue.
is not limited to amendments made to overcome
prior art but includes any reason that affects
issuance of a patent.
d Even a “voluntary” amendment can create
prosecution history estoppel.
e If a claim amendment creates prosecution
history estoppel, there is no room at all for
application of the doctrine of equivalents.
f When a presumption is made of prosecution
history estoppel due to the reason that explanation
for a claim amendment is not established, there is
no room at all for application of the doctrine of
equivalents.
While some of CAFC decisions made after the
Festo in banc decision seem to strictly follow the
holdings of the in banc decision, there is also found
a decision holding that the rule of prosecution
history estoppel should not apply to redefinition of
elements in a patent claim(*18).
The Festo in banc decision was brought up to
the Supreme Court by an appeal with respect to the
above points of dispute c and e and received by
the same. The U.S. Government issued a brief in
regard to the trial at the Supreme Court. The
Government’s brief is summarized as follows.
The complete bar approach excludes
application of the doctrine of equivalents to
“after-arising technologies” developed after a
restrictive amendment. In the meantime, the
Warner-Jenkinson Supreme Court’s decision
holds that presumption of prosecution history
estoppel based on restrictive amendment is
refutable. Prohibition of refutation to
presumption based on “after arising
technologies” is incompatible with the same
Supreme Court’s decision that affirmed
protection against infringement based on
interchangeable after- arising technology.
Various other opinions have also been
submitted, and how the Supreme Court will rule on
this case is attracting attention.
(v) Test of the doctrine of equivalents with
“hypothetical claim”
A theory called “hypothetical claim theory
rule” is acknowledged that any product which is
covered by a hypothetical claim does not constitute
an infringement under the doctrine of equivalents if
such a hypothetical claim is not patentable over
prior art, although this theory was not discussed in
the Warner-Jenkinson Supreme Court’s decision.
(3) Regarding Purport of Application of the
Doctrine of Equivalents
The doctrine of equivalents is not a remedy for
mis-drafting of a patent claim. In the meantime,
3
Trends of Decisions Involving Interpretation
of Functional Claims
(1) Introduction
In the U.S., a special provision regarding
functional claims is stipulated, namely, 35
U.S.C§112(6) serves as a compromise measure
between practical requirements and the principle of
distinctness. Examination in practice and claim
interpretation is exercised on the premise of this
special provision. This special provision may seem
to impose a different discipline in the U.S. Patent
Law from the Japanese Patent Law which lacks
(*18) Turbocare Division of Demag Delaval Turbomachinery Co. v. GE, 60 USPQ 2d 1017 (Fed. Cir. 2001).
(*19) Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc., 238 F.3d 1347, 2001 U.S. App. LEXIS 4038 (Fed. Cir.
2001)(en banc)（this case was decided on March 28, 2002, after the report of this study was published, to hold that the
scope of equivalence does not extend to encompass any invention disclosed in the specification but not set forth in the
(*18)
(*19)
claims.
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such a provision. This provision, however, is
considered as expressing a guide to interpretation
of functional claims when the basic principle of the
U.S. Patent Law is applied to functional claims, or
how to accept functional claims. An important hint
exists in this special provision of the U.S. Patent
law as to how to handle similar functional claims
under Japanese Patent Law.
(2) Functional Claims Under Distinctness
Rule
An opinion has existed that functional claims
do not comply with the principle of distinctness set
forth in 35 USC §112(2). In fact, in the Halliburton
Supreme Court decision, a patent claim was
decided as being invalid as being indefinite and too
wide. In order to address this problem, the U.S.
Congress revised 35 U.S.C. in 1952 to add §112(6)
which admits functional expressions of patent
claims under certain conditions, thus legislatively
resolving the issue of conflict between functional
expressions of patent claims and the principle of
distinctness.
(3) How Functional Claims Are Treated in
Prosecution
Conventionally, the USPTO has made it a rule
not to apply §112(6) in the course of prosecution,
and examined applications based on literal
interpretation.
This practice has been criticized that claim
interpretation during prosecution is improperly
wide as compared to restricted interpretation of
claims of patented invention under §112(6).
Under these circumstances, the Donaldson in
banc decision(*20) disaffirmed the conventional
examination practice and held that §112(6) should
be considered also in the course of prosecution. As
a result, in the current examination procedure, once
the examiner finds thatthe claim fall under an
equivalent of the prior art and that the prior art is
an equivalent of the structures or the like disclosed
in the specification, the burden of proof is on the
applicant to show that the prior art is not an
equivalent.
(4) Whether to Apply 35 USC §112(6)
Special claim interpretation is required when
§112(6) is applied. This gives rise to a question as
to on what occasion should this Section be applied.
In Unidynamics Corp. v. Automatic Products
International(*21), the CAFC held that §112(6)
applies even when a functional expression lacks the
word “for”. In Media Communications LLC v.
ITC(*22), a lower court’s decision which admitted the
application of §112(6) was overturned by the CAFC
(*20)
(*21)
(*22)
(*23)
(*20)
(*24)
(*21)
(*25)
(*22)
for the reason that lack of words “means for”
creates a presumption that resorting to §112(6) was
not sought for so that a word in a claim should be
construed to define a specific structure. Even when
the above-mentioned presumption is made, §112(6)
may apply if means for performing a specific
function is not properly written in a functional
claim(*23).
This serves as a relief measure against
invalidation of a patent based on failure to meet the
distinctness requirement.
For patentees, §112(6) is both advantageous
and disadvantageous. This Section, when applied,
may removea reason for invalidation based on
unduly wide, obscure, and indefinite claim wording,
i.e., failure to meet the distinctness requirement.
On the other hand, the same Section serves to
restrict the scope of an element in a claim of a
patent only to structure, material, or acts described
in the specification, and equivalents thereof.
(5) Literal Construction of Functional Claims
Under the legal theory of “reverse doctrine of
equivalents”, an accused product may not infringe a
claim even if all the elements in the claim literally
read on the accused product. With regard to
functional claims provided in §112(6), a accused
product does not infringe such a claim even if the
claim literally reads on the product, provided that
the product is not identical or equivalent to the
structure, material, or acts disclosed in the
specification. Thus, §112(6) is regarded as being a
legal measure which authorizes the reverse
doctrine of equivalents(*24).
Therefore, in order that a functional claim is
literally met by an accused product, a court must
find that the product has is identical or equivalent in
terms of structure, material, or acts disclosed in the
specification, and that the function is identical(*25).
Whether the requirement of “identity of
function” is met can be determined by evaluating
the “equivalents” prescribed in §112(6) in the light
of tests that are similar to those applied for the
doctrine of equivalents. Anyway, identity of the
function is an essential factor.
Obviously, the provision of “equivalents
thereof” prescribed in §112(6) and the doctrine of
equivalents have different purposes and are applied
on different occasions. It is necessary, however, to
clarify the difference between them.
In the aforementioned Valmont case, the court
held that, while the doctrine of equivalents relies
upon the triple identity test, §112(6) requires only a
comparison between a structure disclosed in the
In re Donaldson Co., 29 USPQ 2d 1845 (Fed. Cir. 1994).
Unidynamics Corp. v. Automatic Products International, 48 USPQ 2d 1099 (Fed. Cir. 1999).
Media Communications LLC v. ITC, 48 USPQ 2d 1880 (Fed. Cir. 1998).
Micro Chem. Inc. v. Great Plains Chem. Co., 52 USPQ 2d 1258 (Fed. Cir. 1999).
(*23)
Valmont Indus. Inc. v. Peinke Mfg. Co. Inc., 25 USPQ2d 1451 (Fed.
Cir. 1993).
(*24)
Pennwalt Corp. v. Durand-Wayland, Inc., 3 USPQ 2d 1737, 1739
(Fed. Cir. 1987).
(*25)
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specification and that of an accused product,
differently from the doctrine of equivalents.
In Chuninata Concrete Concept, Inc. v. Cardinal
Indus, Inc.(*26), the court confirmed that §112(6) and
the doctrine of equivalents have different origins
but should rely upon similar tests. Based on this
principle, the court made it clear there are two
points of difference between them: namely, c the
time criterion for the question as to insubstantial
difference under the doctrine of equivalence is the
time of infringement, whereas, for §112(6), the
time criterion is the time of issue of a patent, so
that §112(6) requires that only the art that existed
at the time of issue of the patent be considered, in
contrast to the doctrine of equivalents, which
requires that technologies developed after the
issue of the patent also be considered; and d for
non-essential difference under §112(6) it is
required that the functions be identical to each
other, while the doctrine of equivalence inquires
only whether the functions, ways and the results
are substantially the same, respectively. The court
also held that, when an equivalent matter that was
known at the time of issue of a patent is considered,
such a matter does not come under the doctrine of
equivalents if it is decided as being not equivalent
under §112(6).
In Odetics case(*27), the court affirmed that
whether the requirement of §112(6) is met is
determined in the light of tests that are similar to
those used under the doctrine of equivalents, on
condition that the functions are identical. At this
time, however, the court disaffirmed the use of the
all elements rule, for the reason that element-byelement comparison through an analysis of a
claimed structure is inappropriate because the
structure corresponding to the claimed functions as
a whole alone can limit the claim.
As will be understood from the foregoing,
there is no comprehensive rule concerning the
“equivalents” prescribed in §112(6) and a question
still remains in this connection.
(6) Functional Claim and the Doctrine of
Equivalents
Conventionally, use of the doctrine of
equivalents in interpretation of functional claims
has been considered only as “a saying by the way”
(obiter dicta). This common understanding was
relied upon for the first time by the CAFC in WMS
Gaming, Inc. v. International Game Tech.(*28)
In this case, the CAFC denied literal
infringement on a functional claim because function
is not identical and affirmed infringement under the
doctrine of equivalents for the reasons that the
(*26)
(*27)
(*28)
(*26)
(*29)
(*27)
(*30)
(*28)
function of the accused product was substantially
the same as that of the claimed invention and that
the accused product produced the same result in
the same way as the claimed invention.
Under the current U.S. case law, there are two
types of patterns of infringement in connection with
functional claims: one in which the function of an
accused product is not identical but substantially
identical to that disclosed in the specification; and
the other in which interchangeability with
technologies developed after the filing of patent
application is questioned.
4
Trends of Decisions on Interpretation of
Product-By-Process Claims
(1) Definition of “Product-By-Process Claim”
A “product” claim inherently defines a product
by structural features and may be infringed by a
product on which the claim literally reads, even if
the infringing product is manufactured by a
different process disclosed in the patent.
A “product-by-process claim” is a claim in
which at least a part of a product is defined by a
process. Applicants generally prefer product claims
because product-by-process claims are liable to be
interpreted restrictively to cover only products
produced by the processes set forth in such claims.
Applicants, however, are not reluctant to submit
product-by-process claims particularly when they
find it difficult to define the natures of invented
products in addition to product claims. The USPTO
admits such a way of claim drafting as long as the
distinctness requirement is satisfied(*29).
(2) Interpretation of Product-By-Process
Claims in Prosecution
The patentability of a product-by-process claim
is examined by construing the claim broadly.
When a prior art shows a product which is
reasonably understood as having only a slight
difference from the claimed product, the claim is
rejected as being anticipated by or obvious from the
prior art. Since the USPTO themselves is unable to
physically compare the prior art product and the
claimed product by actually manufacturing the prior
art product, the examining procedure allows
examiners to reject claims based on prima facie lack
of novelty or prima facie obviousness, thus
reducing the burden of proof on the examiners(*30).
(3) Interpretation of Rights Covered by
Product-By-Process Claims
There are two inconsistent CAFC decisions on
the interpretation of product-by-process claims: one
holding that a product which is the same as the
Chiuminatta Concrete Concept Inc. v. Cardinal Indus. Inc., 46 USPQ 2d 1752 (Fed. Cir. 1998).
Odetics Inc. v. Storage Tech Corp., 51 USPQ 2d 1225 (Fed. Cir. 1999).
WMS Gaming Inc. v. International Game Tech., 51 USPQ 2d 1385 (Fed. Cir. 1999).
MPEP § 706.03(e) (1974).
(*29)
MPEP § 2113 (2001).
(*30)
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product defined by a product-by-process claim falls
within the scope of the claim regardless of the
production process; and the other holding that a
product is not covered by a product-by-process
claim if produced by a different process.
In Scripps case(*31), the CAFC took a position
that the claimed product is not limited to that
prepared by the process set forth in the claims. The
court held that, since a claim must be interpreted in
the same way both in determination of validity of
the claim and determination of infringement, the
correct reading of product-by-process claims is that
they are not limited to products produced by the
process stated in the claims. In the Scripps decision,
however, the CAFC held that there was no
infringement by applyning the reverse doctrine of
equivalents because the accused product was
different from the patentee’s product and excelled
the latter in purity. In contrast, in Atlantic
Thermoplastics case(*32), Atlantic, relying upon the
Scripps decision, asserted that the process set forth
in its product-by-process claims did not limit the
scope of the claimed product. The CAFC rejected
this assertion for the reason that Scripps decision
did not fully study the Supreme Court decisions.
The CAFC then cited some Supreme Court
decisions which limited the scope only to products
that were prepared by processes set forth in the
claims, and held that the “process limitations”
should be read into the scope of the claims, unlike
the administrative decision on patentability in the
examination procedure.
In view of the fact that two contradictory
decisions were made by two different assemblies,
Atlantic requested an in banc rehearing where its
assertion was denied although four judges were
against the denial(*33).
Subsequent district court decisions also varied.
One district court decision held that a product
prepared by a different process does not fall within
the scope of the claim even if the product per se is
the same, whereas another district court decision
held that a product is encompassed by a claim if the
product per se is the same as the claimed product,
regardless of the preparation process(*34). The latter
decision was appealed to the CAFC and how the
CAFC will deal with this case is drawing attention.
(4) Opinion of Professor Takenaka of
University of Washington
In the research committee for discussion of the
US situation organized under this study, Professor
Takenaka of the University of Washington raised
the following point.
It is difficult to examination this product-byprocess type claims with respect to the enabling
(*31)
(*32)
(*32)
(*33)
(*33)
(*34)
(*34)
(*31)
requirement, the description requirement and the
distinctness requirement. As it is impossible to add
a structural feature to this type of claim after
patenting, there is a substantial risk of being
invalidated. In addition, since the CAFC is
materially negative to the “experimental use
doctrine”, competitors cannot experimentally
manufacture a patented product and compare the
product with their own products. Furthermore,
element-by-element comparison is impossible
because there is no recitation of structural
limitations. Product-By-Process claim, therefore, is
not considered significant in claim drafting.
(5) Consideration
If a product, which is produced by a process
different from that stated in a product-by-process
claim but the same in nature as the claimed product,
is encompassed by the claim, any third party will be
unduly burdened of manufacturing the patented
product in order to compare such a product with
its own product. In addition, it is considered difficult
to specify the nature of the product defined by a
product-by-process claim. As inventions of technical
fields with rapid progress, e.g., biotechnology, may
not be defined with structural characteristics at the
time of filing of a patent application, it may be a
reasonable strategy to specify a part of a claim by a
process to secure a right and, when the structure of
the invention has been made clear, to extend the
scope of the right to cover the same product
prepared by a different process. It is to be noted,
however, that a patent claim has a primary function
of making notice to third parties. In order to avoid
any unforeseeable disadvantage to caused to third
parties, any attempt to extend the right to
encompass products made by a process other than
the disclosed process requires sufficient care.
It might be possible for courts to interpret a
product-by-process claim broadly as done by the
USPTO, when evaluating the validity of the claim.
However, if a product produced by the process
stated in the claim alone can infringe, it might be
unnecessary to determine the validity of the claim
with respect to the other scope of the claim. Thus,
it will be sufficient for the courts to interpret the
claim in the same way as that for the determination
of infringement.
As discussed above, it seems that the majority
of decisions hold that a product-by-process claim
covers only the product produced by the process
stated in the claim. Nevertheless, it will not be
appropriate to unconditionally apply this rule of claim
interpretation in the course of the examination
procedure, regardless of the disclosure in the
specification. From this point of view, it might
Scripps Clinic & Research Fdn. v. Genentech, Inc., 18 USPQ 2d 1001, 1016 (Fed. Cir. 1991).
Atlantic Thermoplastics Co. Inc. v. Faytex Corp., 23 USPQ 2d 1481 (Fed. Cir. 1992).
Atlantic Thermoplastics Co. Inc. v. Faytex Corp., 23 USPQ 2d 1801 (Fed. Cir. 1992).
Trustees of Columbia University v. Roche Diagnostics GmbH, (D. Mass. No. 93-11512-NG, 2000).
IIP Bulletin 2002
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be not useless to determine novelty and
non-obviousness of the claimed product per se of a
product-by-process claim, while construing the
claim without limiting it to the process set forth in
the claim, as done by the USPTO in the
prosecution.
The nature of product-by-process claims
cannot be described simply. In particular, there are
many issues to be considered on the claim
interpretation in infringement litigation, such as the
wording of individual product-by-process claims,
consistency with the disclosure in the specification,
features which render the patentability, and so forth.
Reducing these issues to the sole issue of whether
or not the scope of claim is limited to the product
produced by the process in the claim and settling
this issue alone will not give a proper guide to claim
interpretation in the United States. From the
concrete situations and the opinions of Judges of
the Scripps case and Atlantic Thermoplastics case,
it is seen how the interpretation of product-byprocess claims is difficult. At the same time,
versatility in claim interpretation according to the
specifics demonstrated in these cases is informative.
Attention should therefore be focused on future
court decisions in this regard.
product are the same, thus affording a rather
relaxed view of claim interpretation. This theory,
however, did not provide any clear standards or
criterion. A protocol concerning EPC concluded
in 1973 suggests that a compromise between the
strict claim interpretation dominant in the U.K. and
the rather loose standard relied upon in Germany
would be appropriate. In compliance with this
protocol, U.K. Patent Law was fully revised in 1977
including Section 125 providing claim interpretation.
Regarding claim interpretation, a decision was
made in 1982 in Catnic, working out a new standard
called the “purposive construction” theory which
established a basis for current claim interpretation.
Then, in the Improver case, a decision was made
attempting to formulate the Catnic standard.
These two decisions were made on patents
under the old Patent Law. Thus, the “purposive
construction theory” presented in the Catnic case
is considered as a standards for claim interpretation
effective as a common law under the old Patent Law.
Whether the “purposive construction theory”
(Catnic=Improver standards) should apply to
patents under the current Patent law is an issue.
Although some lower court decisions held that
claim interpretation should strictly follow the
statutory construction of Article 125 envisaging
current trends in European community rather that
relying upon the Catnic standard underthe common
law, judicial precedents and majority opinion affirm
the effectiveness of the Catnic decision as a
precedent in claim interpretation of patents under
the current Patent Law.
Ⅱ Trends of Court Decisions in the
United Kigdom
1
Characteristics of Claim Interpretation
Specific to the U.K. Among European
Countries
2
It is known that claims are interpreted rather
strictly in the U.K. In contrast to Germany where
the central definition principle is dominant, the U.K.
patent system is oriented towards a peripheral
definition principle seeking legal stability. This
difference symbolically appears in the Epilady cases
in which an identical technology was decided as
infringing in Germany and not infringing in the U.K.
While as a part of the activities towards
harmonization in the European community, an
effort to clarify standards of claim interpretation has
been made with Article 69 of the European Patent
Convention and the protocol concerning construction
of Article 69, the differences by country, however,
are said to be still innegligible.
The practice of claim interpretation in the U.K.
originates from the 1852 Act which set out the duty
of submitting a written specification. Then, the
1949 Act determined that a claim is the “definition
of the scope sought for a patent”, progressively
emphasizing the peripheral definition function of
claims in the patent system. In the meantime, the
“Pith and Marrow” theory emerged in 1877 which
determines that infringement is established when
the pith and marrow of invention and an accused
●
Standards for Claim Interpretation
(1) Catnic=Improver Test
The claim interpretation standard referred to
as the Catnic=Improver test used by U.K. courts
has the following three factors or requirements.
First requirement:
Does the variant have a material effect upon
the way the invention works? If yes, the variant is
outside the claim. If no:)
Second requirement:
Would this (i.e. the fact that variant has no
material effect) have been obvious at the date of
publication of the patent to a reader skilled in the
art? If no, the variant is outside the claim. If yes:
Third requirement:
Would the skilled in the art nevertheless
understood from the language of the claim that
patentee intended that strict compliance with the
primary meaning was an essential requirement of
the invention? If yes, the variant is outside the
claim.
A comparison between these three requirements
and the five requirements adopted in Japan provides
the following.
The first requirement of the Catnic=Improver
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Catnic=Improver test.
In the Kastner v. Rizla case, the Patent County
Court denied infringement but the Court of Appeal
decided that there was infringement. The Appeal
Court decision ([1995]PRC 585) held that there are
“obvious mechanical equivalents” which are
nothing but substitutions with a known technology,
and “mechanical equivalents” which are to be
judged on infringement after a more normative,
purposive construction. In this case, the Appeal
Court affirmed the infringement based on the
purposive construction of a claim. More specifically,
focusing on the third requirement of the
Catnic=Improver test, the Appeal Court held that
a person skilled in the art would never have
considered that the patentee intended to strictly
comply with the claim wording, since the variant
was immaterial.
In the Biolet v. Valmet case, ([1997] RPC 479),
the court decomposed a claim into elements and
executed purposive construction on an element
which was not found in an accused product, leading
to the conclusion that there was infringement.
There are several similar decisions.
The following cases denied infringement.
The decision in the Daily v. Etablissements
Fernand Berchet case ([1993] RPC 357) denied
infringement based on the first requirement of the
Catnic=Improver test. In this case, the court held
that there was no infringement because the
operation/result of the patented invention were not
achievable by the accused product. In a very recent
decision in the Amersham Pharmacia Biotech v.
Amicon case ([2001] EWCA Civ 1042), the court
denied infringement for the reason that the scope of
protection cannot be extended to encompass a
defendant’s technology which relied upon an
entirely different mechanism, though the
defendant’s technology achieved the same result as
the patented invention.
The decision in the PLG Research v. Ardon
International ([1955] FSR 116) is a case in which
infringement was denied based on the second
requirement of the Catnic=Improver test. In this
case, the court held that there was no infringement
because it was not obvious for the person skilled in
the art whether substitution with an accused
product had no material effect on the
operation/result.
The
second
requirement
of
the
Catnic=Improver test was also addressed in the
currently noted American Products v. Novartis
Pharmaceuticals case (the decision of the High
Court:[2000] RPC 547, the decision of the Court
of Appeal:[2001] RPC 159). The patent in
dispute pertained to Rapamycin, a known
immunosuppressant, and included Swiss-type
claims directed to a second medical use of the agent
and failing to mention any derivative. The
defendant was sued for infringing the patent by the
test corresponds to “identity of operation/working
effect” required in Japan. The second requirement
corresponds to the “obviousness” concept in
Japanese practice, although the Catnic=Improver
test significantly differs in that it recites the
publication date of the patent as the critical date.
The third requirement presumes that the first
and second requirements are satisfied. Thus, the
third requirement questions how a person skilled in
the art would have evaluated the fact that the
patentee dared to draft a narrow claim despite the
fact that a person skilled in the art would have
reasonably been enabled to draft a broader claim.
Infringement is denied if the answer to this
question is that a person skilled in the art upon
reading the claim language had understood that the
patentee selected a specific wording with the
intention that the wording should be construed
literally and strictly. This approach is similar to the
concept of “intentional exception” discussed in
Japan. Strict application of the third requirement of
the Catnic=Improver test will leave substantially
no room for the so-called doctrine of equivalents.
Thus, how to deal with the third requirement is an
issue.
The first and second requirements are
considered as matter of fact, while the third
requirement is considered as matter of law. Thus, it
is generally understood that the first and second
requirements play a role of assessing premises that
have to be cleared before entering into the question
of the third requirement.
In the U.K., there is no distinct legal theory
which would correspond to prosecution history
estoppel. A legal theory referred to as the “Gillette
defence” has been known as a legal measure for
so-called defense on prior art. This theory, however,
is not used so frequently because validity of patents
can also be determined in infringement law suits in
the U.K.
(2) Article Relied on for Claim Interpretation
The basis for claim interpretation is found in
Article 125 of the current U.K. Patent Law (1977).
Article 69 EPC, which is recited in Article 125,
Paragraph 3 of the U.K. Patent Law, contains similar
provisions. The protocol concerning construction of
Article 69 has a paragraph concerning equivalence.
The last sentence of the protocol devoted to
equivalence was added by a revision made in 2000.
This sentence, however, is nothing but the result of
compromise, and various opinions presented in
preparatory discussion are not adopted in the
protocol. Future trends must be followed to see
how the last sentence will influence claim
interpretation practice.
3
Recent Decisions
The following is an overview on recent
decisions that affirmed infringement based on the
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use of a derivative. The High Court affirmed
infringement for the reason that it was expectable
by a skilled person that the derivative had a high
probability of producing a similar effect, although
the mechanism of the medical effect produced by
Rapamycin and, accordingly, what derivative would
produce the same medical effect were not known to
a person skilled in the art at the priority date of the
patent application. This High Court decision was
reversed by the Court of Appeal. The Court of
Appeal held that the expectation by a person skilled
in the art of the fact that the derivative would
achieve the same operation/result alone was
insufficient to satisfy the second requirement, and
denied fulfillment of the second requirement for the
reason that it should have been clear to a person
skilled in the art that the derivative in question
would achieve the same operation/result. The
Court of Appeal further held that a person skilled in
the art would have understood that the patentee did
not mention any derivative because the patentee
intended to strictly comply with the meaning of the
claim wording, thus establishing failure to meet the
third requirement. For these reasons, the Court of
Appeal held that there was no infringement. This
case was then appealed to the House of Lords. How
the House of Lords will decide on this case is a
matter of great interest.
The decision in the Optical Coating Lab. v.
Pilkington case([1995] RPC 145) is noted as
denying infringement based on the failure to meet
the third requirement. More specifically, the court
denied infringement for the reasons that the
patentee willfully restrained from claiming the
technology of the defendant’s product in order to
avert any suspicion on the validity of the patent,
and that a person skilled in the art would consider
that the patentee did not have intention to have the
technology of the defendant’s product encompassed
by the scope of the patent. It is to be noted that the
court held that it is the case that the third
requirement is not satisfied where a “plausible
reason” exists for the patentee to intend to restrict
the scope strictly in compliance with the claim
wording.
While
judicial
precedents
are
being
accumulated, the points to be clarified in regard to
the Catnic=Improver test seems to clarify the
time criterion to be applied to the second
requirement, threshold of the second requirement,
and the threshold of the third requirement.
4
process claims. These types of claims are interpreted
and enforced in the same ways as those for ordinary
claims. In the entrusted research of this time, it
has been reported that no particularly serious
discussion has been made in the U.K. regarding the
examination and interpretation of these two types
of claims.
Ⅲ Trends of Court Decisions in
Germany
1
Provisions
Interpretation
Concerning
Claim
(1) Provisions in the Current Law
Article 69 (1) EPC and Article 14 of the
German Patent Law pertain to claim interpretation.
Construction of Article 69 EPC follows the protocol
to the EPC.
A German judicial precedent holds that the
stipulation in the protocol also applies to the
construction of Article 14 of the German Patent
Law which contains the same prescription(*35). This
rule clearly excludes the former practice which
permitted a broad interpretation departing from
claims based on a concept so-called “General
Inventive Idea”. Thus, the stipulation in the
protocol has naturally invited a change in the way of
interpreting the scope of protection of inventions in
Germany. This protocol is regarded as being
enforceable by law.
(2) Movement Toward Revision
A diplomatic conference of Contracting States
of the European Patent Organization was held in
January 2000, in which a proposal was made to
incorporate additional paragraphs relating to the
doctrine of equivalents and file wrapper estoppel
into the protocol concerning construction of Article
69 EPC. In another diplomatic conference held in
November 2000 at Munich, the U.K. strongly
protested against the proposal. Germany also made
a stiff opposition against a proposal to set the
critical time for evaluation of equivalence to the
time of infringement. In consequence, a paragraph
relating to the doctrine of equivalents was added
after a modification of the original proposal,
whereas an additional paragraph relating to file
wrapper estoppel was canceled.
2
Identical Infringement
Under German patent practice, the concept
of “literal infringement” is referred to as
wortsinngemässe/identische Verletzung (wordmeaning/identical infringement).
However, the concept of identical infringement
is not to simply determine the scope of protection
Interpretation of Functional Claims and
Product-By-Process Claims
As is the case in Japan, no specific provisions
are legislated in the U.K. in regard to the
interpretation of functional claims and product-by-
(*35) Benkard, Patentgesetz 9. S. 532 (C. H. Beck, 1993); BGH GRUR
(*35) 1986, 803, 805 - Formstein.
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by the meaning of the claim wording alone. More
specifically, there is a holding stating “It is not
allowed to be apprehended by the wording of a
claim. Technical significance of the subject of an
invention may not be also neglected.” Another
holding states “Solving means, which is known to a
person skilled in the art as being able to achieve
the same effect by its ordinary function, also fall
under the meaning of the word ‘technically
comprehensible solving means’, even if not
explicitly disclosed in the patent specification.”(*36)
The determination on patent infringement
begins with defining the scope of identical
infringement, i.e., the meaning of the claim. There
is a judicial precedent which held that “When
testing whether a patent has been infringed, the
first step is to establish what are the terms of the
claims as they would be understood by a person
skilled in the art, which involves ascertaining what
their wording means to such a person i.e. their
contextual meaning. If, where a specific embodiment
has been contested, the substance of the claim as
thus contested is being used, then the protected
invention is being used.” (*37)
A theory known as the Formstein defense,
referred to also as defense of free state of art,
denies the existence of infringement for the reason
that a mode of art allegedly infringed cannot
constitute any invention in view of the state of art
as of the time of filing (or priority date) and,
hence, there should be no patent infringement.
Judicial precedents in Germany, however, do not
allow this type of defense to be relied upon for the
determination of identical infringement, due to
sharing of power and authority between the
institution, which grants patents and decides
invalidity and the courts, which deal with
infringement disputes. Therefore, if an accused
product is determined as falling within the scope of
identical infringement of a patent and validity of the
patent is questionable, the only way left for the
defendant is to institute an invalidation lawsuit
before the German Federal Patent Court.
3
protection and the range of protection vary from
country to country. For patents derived from
applications filed on or after January 1, 1978, the
scope of protection in regard to the working of an
invention by equivalents is defined by the content
of scope of a claim which is to be confirmed through
interpretation.”
(2) Requirements for Equivalents
c Whether an accused product solves the same
problem as that solved by the invention.
d Whether the solution by the accused product
relies upon the same operation/result as that relied
upon by the invention.
e Whether a person skilled in the art could
understand based on the claimed invention that the
operation/result achieved by the accused product is
the same as that of the invention.
(3) Time Criterion for Evaluation of
Equivalents
In Germany, the priority date, i.e., the date of
filing of application, is the critical date for the
evaluation of equivalents. German patent practice
requires that the subject of a patent should be
inquired based on the disclosure in the specification
with reference to knowledge of a person skilled in
the art at the priority date (filing date) of patent
application. In compliance with this requirement, it
has been made a rule that a question as to whether
an art is equivalent to a patented invention be
addressed based on the state of art available at the
time of the priority date (filing date) of patent
application.
The purpose of this rule is not to exclude
from the scope of equivalents any mode of
execution of invention which uses any substituent
element which produces the same effect as an
element in a claim but did not exist at the time of
priority date (filing date). Thus, the purport of
this rule is to question, based on the state of art
at the time of priority date (filing date), whether
it was possible to use such a substituent element
in place of the element set forth in the claim,
rather than the availability of the substituent
element per se.
(4) Formstein Defense
In regard to the scope of equivalence, an
alleged infringer can defend that the invention of
the allegedly infringed patent has no patentabilty in
view of a prior art or the state of art at the time of
Convention Priority or filing of the patent
application.
As stated before, this type of defense is not
allowed when identical infringement is established.
Therefore, this type of defense must undergo first
determination of the fact that the accused product
has all the “Merkmale” of the claimed invention
and performs the function of the claimed invention
Infringement By Equivalents
(1) Confirmation
of
Infringement
by
Equivalents in Formstein decision
The Formstein decision confirmed as follows in
regard to the scope of equivalents to be applied
after Section 6 (a) of the 1976 Act came into effect.
“In our recognition, extending the scope of
protection to cover equivalent embodiments
beyond the claim language coincides with the legal
approaches of other Contracting States of the
European Patent Convention, although the
procedure for seeking the objective scope of
(*36) Benkard a.a.O.,S.532.
(*37) BGH 1988.6.14－Ionenanalyse, IIC 2/1991, 249.
(*36)
(*37)
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so that the accused product falls within the scope of
protection, and further determination or, at least,
presumption of the fact that at least one “Merkmal”
is equivalently used in the accused product.
4
person skilled in the art to generalize the functional
features over the entire coverage of the functional
expression.
Determination of the scope of a functional
claim also follows Section 14 of the German Patent
Law. Therefore, all the means that achieve the
same effect or characteristic as those stated in the
claim fall within the scope of protection. Thus, a
functional claim is a claim which, by a functional
expression, inclusively defines all possible means
that achieve the same function, regardless of
whether such means are set forth explicitly(*41).
A counterbalance to this practice is that the
questions on novelty and inventive step apply to
the entire coverage of the generalized functional
claim.
File Wrapper Estoppel
Prosecution history estoppel is not considered
in determining the protection scopes of patented
inventions. A ground for this practice is found in a
judicial preceding(*38) which states to read c
“Neither Section 14 nor the protocol prescribes
prosecution history estoppel as interpretation
means for determining the scope of protection.
They do not mention any other means of
interpretation.” and d “If the patent specification
does not describe the scope of protection in a
manner comprehensible to a person skilled in the
art, it is not allowed in an infringement proceedings
to rely upon any statement in prosecution file so as
to interpret the claim to give a scope narrower than
literal interpretation.”
This means that disclaimer and restriction of
the scope of protection must be clearly shown in
the specification.
Nevertheless, contents of a file wrapper may
exceptionally be considered in determining the
scope of protection, when such contents are known
to a person skilled in the art(*39).
5
6
As is the case of functional claims, German
practice allows an invention of an article or product
to be claimed in terms of a production process or an
apparatus used in the production. This type of claim
writing tends to raise a question particularly when
the invention pertains to a novel chemical matter.
In regard to a patent of such a technical field, a
representative “Kommentar” in Germany states to
read “The chemical matter itself is protected
regardless of the production process. Whether the
novel chemical matter is defined in the claim in
terms of a chemical formula, production process, or
a production apparatus does not matter.” (*42)
Claiming a product invention in terms of a
production process is exceptionally permitted only
when no other suitable method of definition is
available, and is required to definitely specify the
product.
Patentability is evaluated on the claimed
product per se, and the scope of protection covers
any and all products having the same characteristics
without being restricted to the product produced by
the process set forth in the claim.
The decision in Trioxan (GRUR 1972, 541;3
IIC 1972, 226) and the decision in Farbbildroehre
(GRUR 79, 461, 464) are major decisions rendered
by the Federal Supreme Court.
Functional Claims
In Germany, there is no provision which would
correspond to 35 U.S.C.§112(6). However, a
judicial precedent allows to define an invention by a
statement of a result to be achieved or the nature of
the invention without stating structural features(*40).
In the entrusted research in this study, it has been
reported that the number of patent applications
including this type of claims is increasing with
increase of patent applications directed to
information technologies.
This type of claim is allowed only when it is
impossible or completely insubstantial to define an
invention by structural features.
At the same time, functional claims must be
accompanied by a disclosure of technical teachings
full enough to enable a person skilled in the art to
carry out the invention over the entire coverage of
the functional expression based on the functional
features set forth in the claim, without
unnecessarily efforts. A functional claim, therefore,
should c set forth means for solving a problem
rather than the problem alone and d enable a
(*38)
(*39)
(*40)
(*38)
(*41)
(*39)
(*42)
(*40)
Product-By-Process Claims
Ⅳ Closing
Within the framework of this study, in addition
to the regular committee, a conference was
organized inviting Mr. Randall R. Rader, a judge of
CAFC, and Professor Toshiko Takenaka of the
BGHZ 3,365,370- Schuhsohle;BGH GRUR 59,317,319- Schaumgummi.
Benkard, a. a. O., S. 520. BGH 25 IIC 420 [1994].
See, BGH GRUR 85,31-Acrylfasern; Schulte “Patentgesetz mit Europaeishem Patentuebereinkommen” Aufl.,S.575.
Schulte a.a.O.,S.504, Benkard a.a.O.,S.493.
(*41)
Benkard a.a.O.,S.507., BGHZ 53,274,282-Schädlingsbekämpfungsmittel,
BGHZ 54,1,22(GRUR 72,80)-Trioxan.
(*42)
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IIP Bulletin 2002
functional claims, and that there are two types of
issues: one which arises when the function of an
accused product is not identical to that disclosed
in the specification but is regarded as being
substantially the same therewith; and the other in
which
interchangeability
with
technologies
developed after the filing of patent application is
questioned.
Functional claims is also accepted in the U.K.
It seems that method or standard for interpretation
of this type of claim is not at issue in the U.K. The
German Patent Office also accepts functional claims
but under a strict condition. In the entrusted
research in Germany, it has been reported that a
functional claim covers all that fall within the scope
generalized from the functional expression of the
claim.
Finally, referring to product-by-process claims,
USPTO in prosecution evaluates the patentability
on the product per se, while affording a broad scope
to this type of claim. However, court decisions in
infringement litigations are divided into two types:
one which holds that an accused product is
encompassed by a patent regardless of the
production process if the product itself is identical
to the claimed product, and the other which
excludes any product produced by a different
process. Such diversification of decisions seems to
be attributed to differences in factors such as the
style of expression of the process in the claim,
features that render the inventions patentable, and
technical fields to which inventions pertain. The
conclusion available at the present stage is that
none can hastily determine which one of these two
types of decisions is reasonable and correct.
Product-by-process claims are accepted also in
the U.K., where no issue seems to exist regarding
the way or standards for interpretation of this type
of claims. In Germany, this type of claims has been
accepted for a long time, and a rule has been
established that any and all products which are
identical to the product produced by executing
the claimed invention fall within the scope of
protection. These features regarding handling of
product-by-process claims in the U.K. and Germany
are contrastive to those in the U.S.
Each and every respects that have been made
clear through this study are considered to be
critical and significant when compared to decisions
made in our country.
Washington University, for exchange of opinions
with the members of the committee. Researches in
Europe were entrusted to Simons & Simons in
London and Vossius & Partners in Munich.
The study was first focused on clarification of
the structure of rules concerning patent
infringement, as well as on general principles of
interpretation of claim language.
A research was also made in regard to the
doctrine of equivalents. In regard to the U.S.,
analysis was made mainly on the decisions after
the Warner-Jenkinson Supreme Court decision. The
analysis made it clear that the Warner-㩷 Jenkinson
decision, which held that the critical time for the
evaluation
of
“possible
knowledge
of
interchangeability” under the doctrine of equivalents
is the time of infringement, has raised a new issue
or problem that the range of equivalents may
inconveniently extend by time. A tendency to
strictly apply the rule of prosecution history
estoppel is also observed, as typically seen in
CAFC Festo in banc decision, 2000.
In the U.K., the theory of “purposive
construction”, i.e., the Catnic=Improver Test,
provides the basic rule for claim interpretation.
Current decisions relying upon “obvious mechanical
equivalents” or “mechanical equivalents” are also
noted. As to the second requirement of the
Catnic=Improver test, the critical time for the
evaluation of obviousness is ruled to be the date of
publication of the patent, which raised an important
issue to be settled. In regard to the third
requirement, it is to be noted that a current
decision held that this requirement is not met when
“plausible reason” exists for the patentee to intend
to restrict the scope of the right strictly in
conformity with the claim wording.
In Germany, the claim interpretation follows
the rule held by the Formstein Federal Supreme
Court decision of 1986, and the doctrine of
equivalents is developed under this rule. In the
diplomatic conference for revision of EPC held in
2000, a proposal was made to modify the protocol
concerning construction of Article 69 EPC so as to
make it clear that the critical time for the
determination of equivalence is the time of
infringement. It has been reported, however,
Germany did not agree to this proposal and
asserted that the critical time should be the priority
date.
In regard to interpretation of functional
claims, the U.S. reconfirmed legislative history and
legislative intent of 35 U.S.C.§112(6). It was found,
however, that opinions are still fluctuating in regard
to the relationship between the doctrine of
equivalents and equivalents per se, as well as the
method for determining whether the doctrine
should apply and the method of determining the
scope of equivalence. It is to be noted that the
doctrine of equivalents is applicable also to
IIP Bulletin 2002
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(Researcher:
Takashi
Ohno)
(Researcher:
Keiji Ohno)
108
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